The North American Association of State and Provincial Lotteries … · 2017-03-30 · (A) The...

The North American Association of State and Provincial Lotteries

Certification Trademark License Agreement

August 2007

Revision 1.1

NASPL Certification Trademark License Agreement August 2007 © 2005-2007, The Open Group 2

THE PARTIES TO THIS AGREEMENT ARE: (1) The North American Association of State and Provincial Lotteries, a not-for-profit

corporation incorporated in the District of Columbia with a place of business at 1 South Broadway, Geneva, OH 44041 and any Affiliated Company (“NASPL”), and

(2) ............................................., a company incorporated in ............................................. with a place of business at ............................................., and any Affiliated Company (“the Licensee”).

WHEREAS:

(A) The North American Association of State and Provincial Lotteries is the proprietor or exclusive licensor of certain Trademarks.

(B) The Licensee wishes to use said Trademarks on and in relation to the Licensee's business practices, products, or technologies, when such business practices, products, or technologies meet the Standards of Quality.

(C) The North American Association of State and Provincial Lotteries is willing to permit the Licensee to use said Trademarks as aforesaid, subject to the provisions of this Agreement.

THE PARTIES THEREFORE AGREE as follows:

1. Definitions In this Agreement the following words shall have the following meaning unless the context otherwise requires:

Affiliated Company In relation to any company referred to in this Agreement, Affiliated Company shall mean:

a. Its holding company, and

b. Any of its subsidiaries, and

c. Any subsidiary of its holding company.

Certification and Verification Authority The organization officially sanctioned to manage the day-to-day operations of the NSI Certification and Verification Program in accordance with the policies defined in the Certification/Verification Policy. The Open Group acts as the Certification and Verification Authority for the NSI Certification and Verification Program.

Certification/Verification Policy The "NSI Certification/Verification Policy" document, along with any Policy Supplements specific to the Business Practice or Technology being certified, as amended from time to time by NASPL, and set forth at http://www.opengroup.org/naspl/conformance/docs/policies.html, or such additional or replacement locations as provided by NASPL.

Certified Entity Any business practice, product, or technology that has been certified in accordance with the Certification/Verification Policy and which continues to meet the requirements for a Certified Entity as defined in the then current Certification/Verification Policy.


Excluded Countries Those countries (if any) set out in Schedule 3 (as amended from time to time in accordance with Sub-clause 2.2 below) in which the Licensee is not permitted to use the Trademarks.

Person Includes a body of persons whether or not incorporated.

Restricted Countries The countries (if any) listed in Schedule 3 (as amended from time to time in accordance with Sub-clause 2.2 below) in which the Licensee is permitted to use the Trademarks pursuant to the conditions set forth on said Schedule.

Standards of Quality The applicable conformance requirements set forth in the Certification/Verification Policy.

Territory Those countries as set out in Schedule 3, Paragraph 3, as amended from time to time in accordance with this Agreement, and any other countries in which NASPL has rights in the Trademarks other than through registration, or any one or more of them as the context requires.

Trademarks The Trademarks described in Schedule 1, whether registered or not.

Trademark Usage Guide The set of rules attached as Schedule 4 hereto describing the form and manner in which the Trademarks are to be used by Licensees (subject to any specific reasonable interpretation by NASPL in individual cases) as amended or revised from time to time by NASPL in accordance with Clauses 5 and 18 below.

2. License

2.1 License Grant In consideration of the payments to be made in accordance with Clause 8 below and subject to Clause 4 (Standards of Quality), Schedule 4 (Trademark Usage Guide), and the other provisions of this Agreement, NASPL hereby grants to the Licensee a non-exclusive, non-transferable (without any right to sublicense) license to use the Trademarks in the Territory on, or in relation to, Certified Entities, including without limitation such use in brochures and marketing materials relating to Certified Entities.

2.2 Restricted and Excluded Countries NASPL may give notice to the Licensee from time to time that a country or territory should be added to the list of Restricted Countries and/or Excluded Countries where it appears or is claimed that the use of the Trademarks in such country or territory infringes the rights of any third party or parties; or the law of that country or territory requires compliance with any specified formality that NASPL reasonably determines to be an excessive burden.


2.3 License Restrictions Save as otherwise expressly authorized in writing by NASPL, the Licensee shall not use the Trademarks other than in accordance with the provisions of this Agreement (including its Schedules).

3. Duration This Agreement and the licenses hereby granted shall commence on the date of counter-signature by NASPL of this Agreement and shall, unless terminated in any of the circumstances of Clause 9 of this Agreement, continue in force:

a. In the case of each license granted hereunder in respect of each of the Trademarks, for so long as NASPL, its licensees, successors or its assigns continue to use the Trademark in connection with goods and/or services relating to software development, business practices, testing or certification; and

b. In the case of this Agreement, until the cessation of NASPL's or its licensees’, successors’ or assigns’ continued use of the last of the Trademarks in connection with goods and/or services relating to software development, business practices, testing or certification.

4. Standards of Quality

4.1 General Obligation All Certified Entities practiced by, supplied by, directly or indirectly, or manufactured for or by the Licensee under or by reference to the Trademarks shall comply with the Standards of Quality, and the Licensee is obliged to adhere to the Certification/Verification Policy. The Licensee hereby warrants and represents that each Certified Entity meets the applicable conformance requirements identified in the Certification/Verification Policy.

4.2 Certification Materials The NSI Certification and Verification Program requires various certification materials (such as documents, test results, or other materials) to be provided by Licensee in order to achieve certification. The Certification and Verification Authority shall retain records of such certification materials as defined in the Certification/Verification Policy. In the event that the Licensee has chosen to retain any such certification materials instead of the Certification and Verification Authority, Licensee shall retain records of such certification materials as defined in the Certification/Verification Policy. All certification materials, and the report of audit thereof, shall be treated as confidential for the purpose of Clause 12.

4.3 Continued Compliance with the Standards of Quality The Licensee shall be obliged to check all modifications to a Certified Entity to ensure that all Certified Entities continue to meet the Standards of Quality. In the event that a Certified Entity ceases to qualify as a Certified Entity, the Licensee shall at its expense immediately, but no later than 90 days after notice that a Certified Entity ceases to qualify as such, cease to make any use of the Trademarks whatsoever on or in relation to that business practice, product, or technology.

In addition, Licensee shall also immediately, but no later than 90 days after notice that a Certified Entity ceases to qualify as such, cause the Trademarks to be removed from all websites, all units


of such product or technology (if applicable), and all written materials, such as Request for Proposals, Proposals, promotional literature, print/electronic advertising and other documentation. Where necessary to achieve this, Licensee shall use its best efforts to recall such products, technologies, or materials from retailers and other Persons (other than the ultimate customer) or, at a minimum, ensure that any use of the Trademarks on such products, technologies, or materials is not visible.

4.4 Application of Trademarks Pursuant to the license granted under Clause 2 above, and notwithstanding the general obligation under Clause 4.1 above, the Trademarks may only be applied to Certified Entities that meet the following conditions:

a) For certified business practices, a business practice that meets the Standards of Quality is being followed for all applicable projects related to the creation or updating of hardware and/or software systems for or on behalf of a NASPL lottery, and for certified products or technologies, a configuration of the product or technology that meets the Standards of Quality is available for delivery, and

b) The same Certified Entity has been certified within the NSI Certification and Verification Program by the Licensee.

4.5 Certification Details to be Made Available Whenever the Trademarks are Used Whenever the Trademarks are displayed on or in relation to Certified Entities in accordance with this Agreement, the Licensee must use the relevant attribution statement in connection with such use as prescribed in the Trademark Usage Guide.

5. Use of the Trademarks

5.1 Trademark Use Guidelines The Licensee may only use the Trademarks in accordance with the Trademark Usage Guide amended from time to time in accordance with Clause 18.

5.2 Trademark Reputation The use of the Trademarks by the Licensee shall at all times be in keeping with their distinctiveness and reputation as determined by NASPL as set forth in this Agreement, and the Licensee shall forthwith cease any use not consistent therewith as set forth in this Agreement.

5.3 Licensee Registration of Trademarks Prohibited The Licensee shall not use, register, or apply to register any mark or name identical to or confusingly similar to the Trademarks in respect of any goods, services, or business practices.

5.4 Trademark License Limited Nothing contained in this Agreement shall entitle the Licensee to use or register the Trademarks as part of any corporate, business, or trading name of the Licensee, or to use the Trademarks outside the Territory.


5.5 Licensee Statements The Licensee shall not intentionally, in any written material or otherwise, make any reference to or use of the Trademarks in such a manner as may lead the reader thereof to believe that the Licensee is licensed to apply the Trademarks to any business practice, product, or technology which is not a Certified Entity at the time such reference is made.

6. Ownership of the Trademarks

6.1 Trademark Owner NASPL is the proprietor or exclusive licensor of the Trademarks and of applications for registration of the Trademarks in various countries, particulars of which are available from NASPL on request, and warrants that it has the right to grant the licenses granted hereunder. It is not aware at the date hereof that the Trademarks or the use of them on or in relation to the Certified Entities in the Territory infringes the rights of any third party but gives no warranty in relation thereto nor as to the validity of any of the applications or registrations.

6.2 No Contest to Trademarks During the term of this Agreement and thereafter, the Licensee undertakes not to do or permit to be done any act which would or might jeopardize or invalidate the Trademarks, their applications, and/or their registrations nor to do any act which might assist or give rise to an application to remove the Trademarks from any national register or which might prejudice the right of NASPL to the Trademarks. Furthermore, the Licensee will not object to or otherwise contest NASPL’s exclusive right, title and interest in and to, or the validity of, the Trademarks.

6.3 Licensee Assistance in Maintaining Trademarks The Licensee shall on request give to NASPL or its authorized representative any information as to its use of the Trademarks which NASPL may reasonably require and will (subject to the provisions of Clause 7 below) render any (non-monetary) assistance reasonably required by NASPL in maintaining the applications, registrations, and/or common law rights of the Trademarks. Such information shall be subject to the provisions of Clause 12 below where applicable.

6.4 Goodwill of Trademarks The Licensee shall not make any representation or do any act which may be taken to indicate that it has any right, title, or interest in or to the ownership or use of the Trademarks except under the terms of this Agreement and acknowledges that nothing contained in this Agreement or done pursuant to this Agreement shall give the Licensee any right, title, or interest in or to the Trademarks. To the extent that any use of the Trademarks by the Licensee in any part of the Territory may result in a development of goodwill in the Trademarks in that part of the Territory, such goodwill shall inure to the sole benefit of and be on behalf of NASPL. Upon termination of this Agreement for any reason, all rights in the Trademarks will automatically revert to NASPL. The Licensee will at any time execute any documents reasonably required by NASPL to confirm NASPL’s ownership of all such rights.


6.5 Licensee Cooperation in Recording Licenses Subject to the Licensee complying with its obligations under this sub-clause and Schedule 2, Paragraph 2, NASPL may wherever required to do so by local laws in any part of the Territory record the Licensee as a Licensee or registered user of the Trademarks. The Licensee shall at NASPL's request assist NASPL as may be necessary (including by executing necessary documents including registered user agreements) for recording the Licensee as a registered user of the Trademarks in any part of the Territory, and the Licensee hereby agrees that each such recordation may be cancelled by NASPL upon any termination of this Agreement in accordance with its terms, and that it shall assist NASPL so far as may be necessary to achieve such cancellation including by executing necessary documents.

At the Licensee's request NASPL shall take all necessary steps to record such licenses with the regulatory authorities in countries where such registration is required or desirable and the Licensee is responsible for reimbursing NASPL all fees and expenses in connection therewith.

6.6 On-Going Trademark Registrations NASPL shall, subject to the Licensee's cooperation, use its reasonable efforts to renew any registrations for the Trademarks already registered, and to procure registrations for applications of the Trademarks. NASPL will add to the Territory any registrations of the Trademarks that are completed in additional countries. However, subject to Sub-clause 18.1 below, NASPL may at any time remove a country from the Territory for legal or justifiable commercial reasons.

7. Infringements

7.1 Infringements of the Trademarks The Licensee shall immediately notify NASPL in writing if the Licensee becomes aware of any unauthorized use, or proposed unauthorized use, by any Person of a trade name, trademark, or trade dress of goods or mode of promotion or advertising, which is identical or confusingly similar to Trademarks, and NASPL may elect, in its discretion, to

a) take action against such Person, at its sole expense, in its own name or in the name of Licensee, with the Licensee’s consent, or join the Licensee as a party, as it in its sole discretion deems required, and to retain all amounts awarded as damages, profits or otherwise in connection with such action, or

b) grant the Licensee the right to take such action, if the Licensee desires, at the Licensee’s own expense, and by attorneys of the Licensee’s choice, as the Licensee in its sole discretion may deem advisable, including the right to sue for infringement. Any such action taken by the Licensee may be taken in the name of NASPL, with NASPL’s consent, or the Licensee, as the Licensee deems appropriate. The monetary proceeds from any such action, claim or settlement arising from any such action, will belong exclusively to the Licensee after the deduction of all of NASPL’s own costs incurred as a result of such proceedings, if any.

Subject to the terms of this Section 7, the Licensee shall not be entitled to bring any action for infringement under any provisions of the laws of any jurisdiction enabling licensees to bring proceedings for infringement of Trademarks PROVIDED ALWAYS that nothing herein shall be deemed to remove from the Licensee any right to bring such proceedings which may not under any relevant country’s laws be excluded by agreement between a licensor and licensee.


7.2 Infringement of Third Party Marks If the Licensee becomes aware that any Person alleges that the Trademarks are invalid or if either party hereto becomes aware that any Person alleges that use of the Trademarks infringes any rights of another party, the Licensee or NASPL, as appropriate, shall immediately notify the other party. The Licensee shall make no comment or admission to any third party in respect thereof except pursuant to any judicial order binding upon it.

7.3 Cooperation The Licensee shall at the request of NASPL cooperate with NASPL in any action, claim, or proceedings brought or threatened in respect of the Trademarks as it relates to their specific license agreement and NASPL shall meet any reasonable expenses incurred by the Licensee to third parties in giving such assistance. Where the Licensee requests NASPL to bring proceedings which NASPL would not otherwise bring in any part of the Territory, the Licensee shall be consulted at all significant stages of such proceedings and shall meet NASPL's costs associated with the bringing of such proceedings. In the event of the successful prosecution of such proceedings NASPL shall remit to the licensee any resulting damages recovered by it after the deduction of all of NASPL's own costs incurred as a result of such proceedings. Notwithstanding the above, it shall be at NASPL's sole discretion whether or not any proceedings are brought or continued.

7.4 Certified Entities Altered by Purchasers and Licensees Purchasers and licensees of the Licensee's Certified Entities and of related materials bearing the Trademarks who may for the purposes of resale or re-licensing be altering the content or specification of all or part of such Certified Entities in such a way as to affect the compliance of such Certified Entities with the Standards of Quality, are not permitted to use the Trademarks on or in relation to such altered business practices, products, or technologies, including in any marketing materials relating thereto, whether supplied by the Licensee or by any other Person, unless such altered business practices, products, or technologies have been specifically certified as Certified Entities for this purpose. The Licensee shall use reasonable efforts to inform purchasers and licensees who may be misusing the Trademarks that they may be infringing the rights of NASPL.

8. Fees The Licensee shall pay NASPL the payments described in the attached Schedule 2 in accordance with the terms of that Schedule.

9. Termination

9.1 Termination By Either Party for Uncured Material Breach Either party may terminate this Agreement without prejudice to its other remedies forthwith by notice, as required in this Agreement, in writing to the other if the other party commits any material breach of this Agreement; provided that, if the breach is capable of remedy within ninety (90) days, the termination notice shall only be given if the party in breach shall not have remedied the same within ninety (90) days of having been given notice in writing specifying the breach and requiring it to be remedied.


For the avoidance of doubt, persistent breach by Licensee of the Trademark Usage Guide shall constitute a material breach of this Agreement. Other examples of material breaches shall include, but are not limited to: (i) Licensee’s use of the Trademarks inconsistent with the license granted under this Agreement, or otherwise contrary to the provisions of this license; (ii) Licensee’s challenge to NASPL’s ownership of the Trademarks or the validity of the Trademarks; or (iii) failure of any of Licensee’s business practices, products or technologies bearing the Trademarks, or marketed using the Trademarks, to meet NASPL’s Standards of Quality of trademark policy.

9.2 Termination by NASPL NASPL may immediately terminate this Agreement forthwith by notice in writing if at any time:

9.2.1 Failure to Pay Fees Except in the case of bona fide dispute the Licensee fails to pay any license fees, royalties, or other payments or provide any statement required in relation to the same within 60 days of their being due; and/or

9.2.2 No Certified Entities The Licensee does not for a period of more than one year operate any business practice in accordance with any Certified Entity or develop, market, produce, or provide support services in connection with any Certified Entity under this Agreement; and/or

9.2.3 Duration Expires An event defined in Section 3 of this Agreement (Duration) as ending the duration of this Agreement occurs; and/or

9.2.4 Prohibited Assignment Licensee makes an assignment for the benefit of its creditors, admits in writing its inability to pay its debts as they become due, commences or is the subject of any proceeding under law relating to any bankruptcy, arrangement, insolvency, or readjustments of its debt, which proceeding is not dismissed within sixty (60) days after commencement; and/or

9.2.5 Legal Liability NASPL determines that the Licensee’s use of the Licensed Trademarks may reasonably lead to legal liability on the part of NASPL, and NASPL provides the Licensee with notice of Termination.

9.3 Termination by Licensee The Licensee may terminate this Agreement at any time upon three months' written notice to NASPL.

9.4 Rights Upon Termination Upon termination of this Agreement, the license and rights granted hereunder shall terminate completely and all rights shall revert to NASPL.


9.5 Use of Trademarks Upon Termination Upon the expiration or termination of this Agreement for whatever reason the Licensee at its expense shall immediately cease to make any use of the Trademarks whatsoever, and shall forthwith cause the Trademarks to be removed from all Certified Entities and from all promotional or other materials. Where necessary to achieve this, Licensee shall use its reasonable efforts to recall Certified Entities, and promotional or other materials from retailers and other Persons (other than the ultimate customer).

NASPL may inspect any such Certified Entities, promotional or other materials to ensure adequate removal of the Trademarks. However, stocks of the Certified Entities or related promotional or other materials bearing the Trademarks existing at the date of expiration or termination of this Agreement, and which were produced in the ordinary course of the Licensee's business, may be disposed of by the Licensee subject to the provisions of this Agreement (including its Schedules) within 90 days thereafter if, at the time of disposal, such Certified Entities comply with the Standards of Quality and can be disposed of in compliance with the terms of this Agreement, but not otherwise.

9.6 Survival of Rights and Obligations Upon Termination All provisions of this Agreement which in order to give effect to their meaning need to survive its termination shall remain in full force and effect thereafter. Without limiting the generality of the foregoing, the obligations of the parties under Clauses 4, 10, 12 and 13 shall survive any termination of this Agreement.

10. Indemnity

10.1 Licensee Obligations The Licensee hereby agrees, at its expense, to defend, indemnify except where prohibited by law and hold NASPL and its respective officers, agents and employees harmless from any and all third party claims, demands, causes of action, judgments and liability (whether criminal or civil, in contract, tort, or otherwise) for losses, damages (including without limitation direct, indirect, and consequential damages and loss of profits, production, use, and contracts), settlements and costs (including attorney’s fees, court costs and expert’s fees) arising out of:

a. Licensee’s or Licensee’s Distributors production, design, manufacture, distribution, shipment, advertising, promotion, offering for sale and/or sale of the Certified Entities or other products, technologies, or services provided by Licensee or Licensee’s Distributors and bearing the Trademarks; and/or

b. The use or misuse of the Trademarks by the Licensee or Licensee’s Distributors; and/or

c. Any decision taken by NASPL or its officers, agents or employees in accordance with this Agreement refusing or withdrawing permission to the Licensee to use the Trademarks on or in relation to any Certified Entity, and the disclosure of any such decision to any Person.

PROVIDED that:

a. This Indemnity shall not apply in respect of any act done by the Licensee on the express instructions of NASPL, and

b. The Licensee (together with any other Licensees under the Trademarks affected by such claims) shall have the conduct of such claims but shall consult fully with NASPL before


taking any action or making any admission or settlement, which may adversely affect NASPL's interests.

10.2 Interpretation Any provision of Sub-clause 10.1 above shall not apply in any circumstances or in respect of any liability or class of liability to the extent that it may not apply in accordance with applicable law. In the event of such a provision being held to be inapplicable or invalid, the parties will make such amendments to this Agreement by the addition or deletion of wording, or otherwise, as to remove the inapplicable or invalid part of the provision but otherwise retain the provision to the benefit of NASPL to the maximum extent permissible under applicable law.

10.3 Damages In no event shall NASPL be liable for any damages, including without limitation, loss of profits, arising from or related to Licensee’s use of the Trademarks or the Termination of this Agreement, even if NASPL has notice of the possibility of such damages.

11. Assignment Neither party shall assign, transfer, subcontract, sub-license, or in any other manner make over to any third party the benefit and/or burden of the whole or any part of this Agreement or purport to do any of the same without the prior written consent of the other not to be unreasonably refused where assignment is part of a merger, reconstruction, or transfer of business and the assignee accepts all the obligations of the Licensee or NASPL, as appropriate, under this Agreement.

12. Confidentiality

12.1 Confidential Information NASPL shall, except where a provision of the Agreement provides otherwise, maintain in confidence all information disclosed to it under or in relation to this Agreement by the Licensee, which is in writing marked “confidential” or, if oral or visual, is identified as confidential at the time of disclosure and reduced to writing marked “confidential” and sent to NASPL within 30 days thereafter, and shall not use any such information except for the purposes of this Agreement. NASPL's obligations under this sub-clause shall be limited to taking such steps as it ordinarily takes to preserve the most important of its own confidential information.

12.2 Non-Confidential Information The obligations of non-disclosure and non-use set out in Sub-clause 12.1 above shall not apply to any item of information which:

a. Is in the public domain at any time (but without prejudice to any Person's rights of action against another Person who wrongfully causes or permits such information to be in the public domain),

b. Was rightfully in a Person's possession without obligation of confidence prior to its disclosure pursuant to this Agreement, or is subsequently independently developed by that Person by employees having no access to the information disclosed hereunder,


c. Is subsequently rightfully obtained without obligation of confidence by a Person from a source other than the Licensee as evidenced by written records,

d. Is required to be disclosed by order of any court of competent jurisdiction or to enable the Trademarks or any license thereunder to be validly registered or notified in any part of the Territory or otherwise to protect the validity of the Trademarks,

PROVIDED that no right or interest under any license, patent, or otherwise shall be acquired by the recipient of any information by virtue of the application of this sub-clause.

12.3 Survival of Confidentiality Obligations The obligations of non-disclosure, and the limitations on use, set out in Sub-clause 12.1 above, shall survive termination of this Agreement but subject to Sub-clause 12.2 above.

12.4 Limited Disclosure NASPL may disclose the Licensee's confidential information to those of its employees who reasonably require to have access to such information. However, NASPL may not disclose the Licensee's confidential information to any employee of a member company in NASPL, unless another exception to the obligations under this sub-clause applies. For the avoidance of doubt, NASPL may disclose the Licensee's confidential information to employees of the Licensee.

13. Export Restrictions The Licensee agrees with respect to its usage of the Trademarks and the Certified Entities to comply with all applicable treaties, laws, and/or regulations, including but not limited to any applicable import or export laws. The Licensee will be responsible for conducting its activities under this Agreement in compliance with such laws.

14. Entire Agreement This Agreement including its Schedules and documents referred to therein, including, but not by way of limitation, the Certification/Verification Policy, constitute the entire agreement and understanding of the parties relating to the subject matter of this Agreement and supersede all prior oral or written agreements, understandings, or arrangements between them relating to such subject matter. For the avoidance of doubt, this Agreement supersedes any agreement between NASPL and the Licensee in respect of the NSI Certification and Verification Program, but does not supersede any agreement in respect of other certification, verification, or compliance programs.

Neither party shall be entitled to rely on any agreement, understanding, arrangement, or representation relating to the subject matter of this Agreement which is not expressly contained in this Agreement and, subject to Clause 18, no change may be made to this Agreement except in writing signed by duly authorized representatives of both parties.

Nothing in this Agreement affects the application of any other Agreement between NASPL and the Licensee (including, without limitation, any membership agreement).


15. Waiver of Rights under this Agreement No failure or delay on the part of either of the parties to exercise any right or remedy under this Agreement shall be construed or operate as a waiver thereof nor shall any single or partial exercise of any right or remedy preclude the further exercise of such right or remedy as the case may be.

16. Notices Any notice or other document to be given under this Agreement shall be in writing in the English language and, except in circumstances where this Agreement specifically provides for notices by electronic mail, shall be deemed to have been duly given if sent by hand or by recorded delivery or registered post, or by facsimile (subsequently confirmed by post) to a party at the address for that party set out above unless a different address has been notified to the other in writing for this purpose.

Notices shall be deemed to have been received by the addressee within 72 hours of posting as above or within 24 hours if sent by hand or facsimile to the addressee's correct address.

17. Interpretation

17.1 Headings The headings in this Agreement are inserted only for convenience and shall not affect its construction.

17.2 Singular and Plural Words Where appropriate words denoting the singular only shall include the plural and vice versa.

18. Schedules

18.1 Amendment of Schedules Subject to any express limitations set out therein, the Schedules to this Agreement may be amended by NASPL from time to time, consistent with the processes established by NASPL, as follows:

• Schedule 1 (Trademarks) will be amended from time to time to reflect the addition and/or removal of a trademark.

• Schedule 2 (Fees) will be amended no more frequently than once per annum.

• Schedule 3 (Territory). Countries will be added on application for and completion of the registration of the Trademarks in such additional countries. Deletions of countries may be made for legal or reasonable commercial reasons and the Licensee will be notified of each such deletion accordingly.

• Schedule 4 (Trademark Usage Guide) will be held as stable as possible in order to protect the Licensees' investment.


Unless otherwise agreed, amendments shall take effect three months after they are communicated in writing to the Licensee.

18.2 Consequences of Amendment of the Trademark Usage Guide If NASPL amends the Trademark Usage Guide, the Licensee is not required to alter and may continue to use any Certified Entity, written material, advertising material, promotional material, or other item already produced in the normal course of business for sale or distribution prior to the effective date of Licensee’s notice of such amendment.

19. Governing Law and Jurisdiction The validity, construction, and performance of this Agreement shall be governed by the law of the State of Ohio and shall be subject to the non-exclusive jurisdiction of the State of Ohio, except that proceedings to the extent only that they relate to the validity or enforcement of any of the Trademarks in any part of the Territory shall be governed by the law and procedures of that part of the Territory.

20. Compliance with Local Requirements If in any jurisdiction the effect of any provision of this Agreement or the absence from this Agreement of any provision would be to prejudice the Trademarks or any remedy under the Trademarks, the parties will make such amendments to this Agreement and execute such further agreements and documents limited to that part of the Territory which falls under such jurisdiction as may be necessary to remove such prejudicial effects.

21. No Joint Venture Nothing contained in this Agreement shall be construed as creating any agency, partnership, or other form of joint enterprise between the parties. The relationship between the parties shall at all times be that of independent contractors. Neither party shall have authority to contract for or bind the other in any manner whatsoever.

22. Severability If any provision of this Agreement shall be held by a court of competent jurisdiction to be contrary to law, all remaining provisions of this Agreement shall remain in full force and effect.


ACCEPTED AND AGREED TO:

North American Association of State and Provincial Lotteries: Licensee:

By:_________________________________ By:_________________________________

Title: _______________________________ Title: _______________________________

Signature: ___________________________ Signature: ___________________________

Date: _______________________________ Date: _______________________________

ADDRESS: ADDRESS:

1 South Broadway_____________________ ___________________________________

Geneva, OH 44041 ___________________ ___________________________________

___________________________________

___________________________________

Facsimile Number: Facsimile Number:

+ 1 440-466-5649_____________________ ___________________________________

Please mail two signed copies of this document to North American Association of State and Provincial Lotteries at the address listed above. NASPL will countersign and return a copy to Licensee at the address listed above. To expedite the signature process, in addition you may send this signature page to NASPL via fax at the facsimile number above.


SCHEDULE 1: THE TRADEMARKS

The NASPL Certification Logo:

The NASPL Certification Logo may only be used in accordance with the Trademark Usage Guide (Schedule 4).


SCHEDULE 2: LICENSE FEES

FEES The payments described below are payable and are subject to revision by NASPL from time to time. They are quoted net of all other applicable taxes and duties which where appropriate will be payable to NASPL (or to the relevant tax authorities as applicable) by the Licensee in addition.

1. Amounts Payable The Licensee shall pay by way of license fees and royalties such amounts as are set out in the certification fee schedule as “Certification Logo Licensing Fee”, published from time to time by NASPL, and made available at:

http://www.opengroup.org/naspl/conformance/docs/NSI_Certification_Fee_Schedule.html.

2. Special Registration Fees Where the Territory specified includes any of the countries referred to in Schedule 3, Paragraph 1, there will be an additional charge as specified in Paragraph 1 above which shall be fixed from time to time so as to cover NASPL's costs of registering the Licensee in those countries as a licensee under the Trademarks.

3. Time of Payment

3.1 The license fee is payable by the Licensee upon execution of this Agreement; an annual license fee is payable on the anniversary of this Agreement.

3.2 Special Registration fees are due upon execution of the Agreement.

4. Revisions of Fees NASPL reserves the right to alter its fee structure in accordance with Sub-clause 18.1 of the Agreement.

5. Payment

5.1 Amounts payable hereunder shall be paid in full without deduction of income or other taxes, charges, and duties that may be imposed except insofar as the Licensee is required to deduct


the same to comply with applicable laws. NASPL and the Licensee shall cooperate in all respects and take all steps necessary:

i. Lawfully to avoid the making of such deduction, and

ii. To take advantage of such double taxation agreements as may be available.

In the event that the Licensee is required to make any such deduction it shall provide NASPL with a certificate or other documentary evidence to enable NASPL to obtain appropriate relief from double taxation of such payment.

5.2 Payments are payable in U.S. dollars by check or by wire transfer to the bank account notified by NASPL from time to time, bank or other charges to be borne by the Licensee. Payment shall be made within 45 days of the due date. NASPL may charge the Licensee interest on any payment not made within 45 days of the due date on a daily basis until the date of receipt of such payment by NASPL at a rate of 20 percent per annum.


SCHEDULE 3: THE TERRITORY

1. Restricted Countries These countries are excluded from the licenses granted under this Agreement unless the special registration fees set out in Schedule 2 have been paid.

NONE

2. Excluded Countries None.

3. Registrations and Applications

Country Mark Class Status Registration No.

United States NASPL Certification Logo

Pending


SCHEDULE 4: TRADEMARK USAGE GUIDE

1. Using Trademarks

1.1 Introduction Trademarks are amongst the most valuable assets of any organization.

Trademarks are important because they:

• Identify and distinguish an entity, such as a product, technology, service, or business practice

• Serve as an assurance of consistency of the quality of such entity

• Assist in advertising and promoting an organization’s practices, or a service, product, or technology

Unlike rights derived from patents and copyrights, which provide protection for only a limited number of years, Trademark rights can last forever. Trademark rights can also be lost forever. The exclusive right granted in a Trademark is usually lost as a result of careless or improper use, usually by allowing the mark to be used as generic or descriptive words for products. All of the following were once valuable Trademarks in the U.S.A.: aspirin, escalator, cellophane, zipper, shredded wheat, corn flakes, and kerosene. All became common or generic words because their owners did not use them carefully and correctly and did not prevent the improper use of them by others.

This Guide describes the rules for the use of the NASPL Certification Logo set out in Schedule 1. It is designed to be a practical guide to practitioners.

1.2 Legal Status This Guide forms Schedule 4 of the North American Association of State and Provincial Lotteries Certification Trademark License Agreement. It forms an integral part of the Agreement and should be read in conjunction with it.

The Agreement defines the conditions and technical criteria that must be fulfilled before the Licensee may make use of the Trademarks. This Guide defines the permitted visual presentation, form, and manner in which the Trademarks can be used by a Licensee who complies with those conditions and technical criteria. Failure to comply with the mandatory provisions of the Guide constitutes a breach of the Agreement, but the Licensee shall use its most reasonable efforts to comply with all the provisions herein.

The only circumstances in which the Trademarks may be used are:

• Use as a Certification Logo on or in relation to Certified Entities.

Of itself, this Guide does not grant permission to use any Trademark.


1.3 Use of Trademarks by Third Parties There are circumstances where, for example, in referring to a Trademark in editorial or articles, the use of a Trademark is either desirable or unavoidable. Such use of Trademarks is permitted, without the requirement for the user to be licensed, provided that the rules in this Guide are followed.

There are instances where a third party may wish to promote its relationship with or the use of services from an organization with certified business practices, or the sale of its products or technologies in relation to a Trademark or to promote a certified product that they distribute. Such uses are permitted under the same principles as are required of licensed users, provided the third party maintains the distinctiveness of the Trademark and that there is no likelihood of confusion between Certified Entities and non-Certified Entities or compromise of any Trademark.

2. Trademark Rules for Proper Usage

2.1 Use in Text and Descriptive Materials Licensees are encouraged to use one of the following examples to refer to Certified Entities in textual materials.

• “Our <entity> is NSI Certified.”

• “Our <entity> is certified under the NSI Certification and Verification Program.”

• “Our <entity>, certified by the NSI Certification and Verification Authority - The Open Group, _________________.”

• “Our <entity>, an NSI certified <business practice / product / technology>, ____________________.”

A Trademark, whenever and wherever it appears in print, must be distinguished from the surrounding text. This applies to all forms of printed media, including advertising copy, product packaging, brochures, manuals, internal memoranda, editorial, articles, correspondence, overhead projector slides, and presentation materials, and to computer video screens.

The graphical design of the Trademark (the “Certification Logo”) must be strictly adhered to. The Trademark must always be used with white space (see Sub-clause 4.3) around it and must never be superimposed on or used in association with other graphics or Trademarks.

You should always mark the first or most significant occurrence of the Trademark as appropriate and must place the required attribution as a footnote. The attribution should use the ® symbol for a registered Trademark and the ™ symbol for an unregistered Trademark. It is acceptable to use an asterisk in place of the Trademark symbol where the medium used (for example, electronic mail) cannot reproduce the ® or ™ symbols. However, this is not intended to authorize use of the asterisk as the norm.

You may translate the Trademark attribution to national language(s).

The Trademark attribution is important as it reminds competitors, licensees, customers, and others that NASPL claims exclusive rights in the marks.

Blanket or generic attributions are not acceptable, such as:

• “All Trademarks are the property of their respective owners.”

The correct attribution is:


• “The NASPL Certification Logo is a trademark of the North American Association of State and Provincial Lotteries.”

In order to clearly identify the exact specification(s) to which a Certified Entity is conformant, the following additional attribution (see below) is required when reference is made to a Certified Entity, or a Trademark is used on or in relation to Certified Entities.

• “<Entity> is NSI certified and meets the <conformance requirements document> conformance requirements.”

• Example: Vendor A’s Requirements Definition business practice is NSI certified and meets the Requirements Definition for Vendors conformance requirements.

• Example: Vendor B’s Lottery Terminal is NSI certified and meets the NSI Bar Code conformance requirements.

This Attribution is required so that a reader may always easily identify the conformance requirements to which a Certified Entity is warranted to comply.

The first occurrence of the business practice, product, or technology name linked with a Trademark should be asterisked and the attribution above used after the Trademark attribution.


3. Graphical Representation of the Trademarks

3.1 The Certification Logo The NASPL Certification Logo is used with the associated text (the <Label>) reproduced in size and position relative to the logo exactly as shown. The <Label> may be repeated for each Conformance Requirements Document against which a Certified Entity is certified. Each <Label> is used to identify a particular NSI certification. The allowable text for each <Label> is specified in the relevant Conformance Requirements Document. The Licensee may only use those labels corresponding to the Conformance Requirements Documents against which the Licensee has achieved certification and may only use a given label in association with entities that have been certified against such Conformance Requirements Document.


Example of the Certification Logo with four labels:

3.2 Transition from a Previous Certification Logo Where a Licensee is already using a previous version of the Certification Logo in respect of any Certified Entity, the Licensee may continue such use in the short term. However, the Licensee should transition to use of the Certification Logo set out in Paragraph 3.1 above (in lieu of the previous Certification Logo) as soon as possible.

3.3 Use of the Certification Logo in Written Materials All use of the Certification Logo in Requests for Proposals, Proposals, advertisements, display boards, promotional material, and catalogs must be in relation to Certified Entities. If any written material refers both to Certified Entities and to non-Certified Entities, the Certification Logo must not be used in such a way as to suggest that all the business practices, products, or technologies referenced are Certified Entities.

3.4 Use of the Certification Logo on Software The Licensee is permitted (and encouraged) to use the Certification Logo with a Certified Entity:

• On the packaging of the software and its media

• In manuals for the software

• On the log-in screen of a device with a graphics screen, provided that if the system can display color on a graphics screen they must be rendered accurately in color. In the case of an alphanumeric screen, the Licensee is permitted to use the alternative forms of display on the log-in screen as follows: “The <software identifier> is NSI certified and meets the <conformance requirements document> conformance requirements”.


The Licensee may use a translation of this statement where to do so would be compatible with the language used for the Certified Entity.

3.5 Use of the Certification Logo on Hardware The Licensee is permitted to use the Certification Logo displayed on the processor (or other visible part of the system) of a device when loaded with and executing a Certified Entity. The Trademark may be permanently fixed to hardware when a Certified Entity is embedded in a medium that cannot be removed from the hardware, such as in the case of a device in which the Certified Entity is embedded in ROM that is part of the device's memory system.

4. Other Conditions for Use of Trademarks

4.1 Combination of Trademarks in Product Names The Trademark may be used in conjunction with a product name only with the prior written permission of NASPL.

Comprehensive examples of proposed usage and any graphic representation must be submitted with the request to NASPL.

4.2 Colors for Trademarks The Certification Logo may be displayed in monochrome (black and white), but color reproduction is preferred and should be applied where practicable. Where color reproduction is applied, it should be applied using one solid color only. Reversed solid color application is acceptable.

The color must never be applied to the Trademark as a screen or a tint.

4.3 General Conditions The Certification Logo can be enlarged or reduced to any size you require, but the relative size and position of the elements must remain the same.

The Trademarks reproduced from the Artwork Reference Sheet (Paragraph 5) should stand alone and must always be surrounded by a generous amount of space. They must not be enclosed within a contrived shape or used as part of another symbol or name (except as prescribed in Paragraph 4.1 above).

The logo must not be juxtaposed to other symbols or text in such a way as to show a connection with them.

For purposes of protecting the Trademarks and their registration, NASPL would like to receive from the Licensee a copy of the final published form of materials on which the Trademarks are used.

To change a logo beyond the provided dimensions, or for additional information, contact NASPL by phone 216-241-2310 or electronic mail at [email protected].


4.4 Positioning of Trademark Symbols

The Trademark symbols (® and ™) should be positioned to the right of the Trademark name as a superscript. Refer to the Artwork Reference Sheet for examples.

5. Artwork Reference Sheet Below is the artwork for the NASPL Certification Logo. These can be used as camera-ready artwork. Alternatively, you may obtain the logos electronically in various graphic formats. Refer to Paragraph 4.2 for further explanation of use.

Note: The use of the NASPL Certification Logo is strictly controlled and it may only be used on and in connection with business practices, products, or technologies registered under the terms and conditions of the North American Association of State and Provincial Lotteries Trademark License Agreement.

NASPL Certification Logo (Example)

Date post:	06-Aug-2020
Category:	Documents
Upload:	others
View:	3 times
Download:	0 times